Any European patent granted by the European Patent Office (EPO) may be opposed under Article 99 of the European Patent Convention (EPC). If successful, the opposition has the effect of centrally invalidating or limiting the patent in all states in which that patent has effect. As such, understanding the basics of opposition proceedings before the EPO is important for both patent proprietors and opponents alike.
Why file an Opposition?
In comparison to national invalidation proceedings, oppositions before the EPO have three main benefits for opponents.
First, as mentioned above, the outcome of the opposition applies in all countries in which the European patent has been validated, thereby avoiding the need for multiple national invalidation actions. Secondly, in recent years the EPO has prioritized reducing the overall timeline of oppositions, with standard files now having a mean processing time of about 19 months. Finally, the cost of EPO opposition proceedings is generally relatively low, particularly when compared to national court proceedings.
Who may file an Opposition?
With the exception of the proprietor, any party in any country may file an opposition to a granted European patent. So-called "straw man" oppositions may also be filed, with the opposition being filed by another person on behalf of an anonymous opponent. This option is attractive when the opponent may have a business relationship to the patent proprietor (for example, as a licensee).
It is not unusual for a patent to be opposed by multiple opponents. In these circumstances, the oppositions are handled together in a single set of proceedings. In addition, opponents may file their oppositions together as joint opponents, which only requires the payment of a single opposition fee.
It is also possible for third parties to file observations during ongoing opposition proceedings. These observations will be taken into account by the opposition division if they call into question the patentability of the invention. However, the third party does not become party to the proceedings (i.e., they have no rights of participation). A similar provision exists during examination of patent applications before the EPO.
What steps are involved in filing an Opposition?
The first step in filing an opposition is to submit a notice of opposition within the nine-month opposition period and pay the opposition fee. The opposition period starts with the publication of the mention of grant of the patent in the European Patent Bulletin. Significantly, there are practically no legal remedies for failing to observe either of these requirements, and it is therefore essential to ensure that the opposition is filed and the fee paid on time.
The notice of opposition itself must, in addition to certain formal requirements, state the extent to which the patent is opposed (i.e., as a whole or just certain claims), the grounds on which the opposition is based, and the supporting facts and evidence for the opposition.
There are three grounds for opposition before the EPO: (a) the subject-matter of the European patent is not patentable under Articles 52 to 57, which include novelty and inventive step; (b) the subject-matter of the patent is insufficiently disclosed; and (c) that the patent contains added subject-matter. In Europe, added subject-matter is assessed very strictly, and this is therefore a very common ground of opposition.
Notably, entitlement of the proprietor to the patent is not a ground for opposition before the EPO (as compared to national proceedings in the UK or US). However, opposition proceedings will be stayed if the division is provided with evidence that national entitlement proceedings are ongoing.
Timeline of an Opposition
Once a notice of opposition has been filed, the patent proprietor is given four months from the expiration of the opposition period to reply to the raised grounds in a statement of defence.
Depending on the nature of the case, each party may then be given the opportunity to respond via further written submissions. However, as part of the EPO's goal of streamlining opposition proceedings, this process is often curtailed.
During the proceedings, the proprietor will usually submit a number of auxiliary requests in addition to their main request (this typically being maintenance of the patent as granted). These auxiliary requests consist of claim amendments narrowing the scope of protection in order to provide fallback positions. The opposition division must consider all of these requests in turn before deciding to invalidate the patent.
Although opposition proceedings may be decided entirely in writing, in most cases a final decision by the opposition division will be made during oral proceedings. Moreover, each party may (and typically do) request oral proceedings under Article 116(1) EPC as part of their right to be heard. Each party is given notice of the date of oral proceedings at least six months in advance, with the deadline for final written submissions typically being two months before the hearing.
Oral Proceedings and Outcomes
Following COVID-19, it is now the EPO's preference for oral proceedings to be conducted by video conference ("ViCo"), however parties may request in-person proceedings "in exceptional circumstances, where there are serious reasons against holding the oral proceedings by videoconference". If required, the EPO will also provide interpretation services into English, French, or German from the language of proceedings at its own expense. Oral proceedings are not limited to the parties of the proceedings, with members of the public being able to attend.
During oral proceedings, the opponent typically presents their arguments first, after which the patentee is given the opportunity to respond. The purpose of this discussion is a further chance to present arguments made during the written submissions, and not to raise new arguments (although this does sometimes occur). The opposition division will then announce their decision at the end of the proceedings, with a full written opinion being issued within six months.
In the decision, the division may decide to either reject the opposition (with the patent maintained as granted), maintain the patent in amended form, or revoke (invalidate) the patent in its entirety.
Any party adversely affected by the outcome of the opposition may then file a notice of appeal. This must be done within two months of the written decision, along with paying the appeal fee of €2,925. The grounds of appeal setting out the appellant's complete case must also be specified, either along with the notice of appeal or within four months from the written decision.
How does the Unified Patent Court (UPC) affect Oppositions?
As of 1 June 2023, the Unified Patent Court (UPC) has come into existence, and has competence in respect of European patents, European patent applications, European patents with unitary effect (Unitary Patents), and Supplementary Protection Certificates (SPCs).
In general, opposition proceedings before the EPO are unaffected by the UPC, since they occur centrally at the EPO and apply to all countries in which the patent has been validated, as opposed to just those countries which are Signatory States of the UPC Agreement (currently 17 out of a total of 39 Member States of the EPO). However, the EPO has stated that parties in opposition proceedings may request accelerated processing if corresponding UPC proceedings are pending.
In addition, it is currently possible to opt non-Unitary patents out of the UPC's jurisdiction, thereby further highlighting the value of opposing a patent at the EPO.
Conclusions
Based on EPO statistics for recent years, approximately one third of oppositions result in the invalidation of the patent, with a further 35-40% resulting in the patent being maintained in amended form. Thus, opposition proceedings represent an effective and affordable way for opponents to protect their interests in Europe.
For further details, we have a pre-recorded webinar discussing European Oppositions with a particular focus on Life Sciences that can be found here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
